While You Were Masked: The Trademark Landscape Shifted

Article by: Christina McAmis

We have all been operating under the COVID-19 pandemic since mid-March. I feel like many of us, myself included, have been so occupied by everything COVID: lockdowns, hand sanitizer, face masks, and in-home schooling, that we haven’t really kept up with any of the other, normally interesting but not mind shattering happenings. Well, hey, that is completely understandable. Due to all of these unprecedented events happening on a global scale, it has been a really difficult year. Even if your sales have boomed, your family has been untouched, and even if everything went right for you, this year has been tough, really tough. If you weren’t a lotto winner and everything didn’t go perfectly for you, this year could have been one of the most challenging of your life.

Boom! Just like that, this year is almost over. What else happened while we have been, so to speak, behind the mask? Well, for one thing, the landscape of Trademark law has been shifting. We are starting to see movement at the United States Trademark and Patent Office (“USPTO”) in the wake of a SCOTUS (Supreme Court of the United States) ruling in United States Patent and Trademark Office et al. v. Booking.com B.V. June 30, 2020, decided shortly before the late Justice Ginsberg’s passing.

The Booking.com case was the first telephonic oral argument the Supreme Court ever heard, showing once again how things have changed during this pandemic. The Booking.com case asks the fundamental question of whether adding a “.com” or other top-level domain name to a generic term will make a protectable mark. Why does it matter? Let’s start with the landscape this case was born into.

The USPTO drew a strong boundary between a mark that is merely descriptive, meaning that it doesn’t identify the source of the product but rather describes the product. There are some brand names that have lost their protected mark due to the brand name becoming descriptive rather than identifying. Some that come to mind include: Band-Aid, Slip ‘n Slide, Jet Ski, and (my personal favorite) Bubble Wrap, among many others. Booking.com sought protection by registering Booking.com as a federally protected mark. The USPTO refused registration on the basis that “booking” is merely a descriptive term; adding the top-level domain name to the generic term does not make it identify the source of the goods or services. Under the previous rule, the top-level domain name did not create a protectable mark and therefore the USPTO refused registration. They stated in their decision that the top-level domain name merely signified the use of the phrase as a domain name.

Booking.com appealed the case all the way to the Supreme Court, arguing that consumers who are familiar with the system would identify the domain name as the source of the services. Justice Ginsberg writing for the Court held that the Booking.com mark was entitled to federal trademark protection. Thus, rejecting the long-standing USPTO rule against “.com” protection. Booking.com successfully argued that when consumers see “booking.com” they think of the company specifically and not just booking services generally, and that although “booking” and “.com” are two generic terms when they are put together they identify the source of the booking services. The Court held that the mark had to be considered as a whole, not just the sum of the parts. Further, the Court concluded that as only one entity has the right to use a domain name, consumers who are familiar with the offering would identify the domain name as the source of the services.

This holding truly shifts the landscape for trademarks similar to Booking.com. The USPTO will be forced to issue federal registration and protections to trademarks that make the combination. Booking.com shows brands that there is a shift away from per se rules when it comes to combining generic terms with top-level domain names. Every application will need to be examined to determine whether the term identifies the source of the service or goods, as indicated by the SCOTUS decisions.

Thus, the landscape shifted, all while we were busy behind our masks. It will be interesting to see how this change in the landscape alters what marks make it to registry, and who will be able to seize the opportunity and capitalize in this changed legal environment. Can you believe this sleeping giant went largely unnoticed? I can. Stay safe, stay sane, and Expand Your Brand™!

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